Patent quality in the United States is the subject of much recent discussion.1 There is a general sentiment that many of the inventions for which patents are issued and successfully enforced do not meet the requirement of patentability. The existence and enforcement of these patents hampers competition and, in the end, hurts the consumer.2 Stories of patent holding companies harassing honest businesses with invalid patents are becoming commonplace in the popular press.3 The existence of these "trolls,"4 and the bad patents they seek to enforce, suggests the United States patent system is not working. In fact, the perceived desperate state of the patent system is getting congressional attention, causing the most significant patent reform bill since 1952 to be introduced in Congress this past legislative session.5
The focus of much of the criticism is on a particular requirement for patentability-nonobviousness.6 The nonobviousness requirement in patent law has been termed the "ultimate condition for patentability."7 It ensures that "even if an invention is new and useful," that invention represents a measurable technological advance beyond what has already been done.8 Only those inventions warrant patent protection. The requirement carries most of the burden of maintaining a balance in patent law between providing an incentive for inventions to be created while not protecting so many minor inventions that protection becomes socially harmful.9 Most recent commentary and criticism regarding nonobviousness focuses on the United States Court of Appeals for the Federal Circuit, the court that exclusively handles appeals in patent cases.10 The main thrust of this criticism is that the Federal Circuit has relaxed the nonobviousness requirement, thereby allowing too much patent protection and, as a result, harming innovation. The criticism is directed at recent Federal Circuit jurisprudence and its alleged modification of the nonobviousness standard.
Recent criticism includes two highly publicized reports-one by the Federal Trade Commission in 2003 and another by the National Research Council in 2004.11 In addition, the Federal Circuit's nonobviousness case law is the subject of a highly publicized case pending before the Supreme Court-KSR International Co. v. Teleflex, Inc.12 The Petitioner, KSR, is supported by intellectual property law professors, economists, legal historians, many Fortune 500 technology companies, and the Solicitor General.13 Furthermore, the Federal Circuit's nonobviousness jurisprudence has been the subject of multiple academic articles asserting the court improperly applies the doctrine.14
All of this criticism of the Federal Circuit's case law focuses, in one form or another, on the "suggestion test" part of the nonobviousness analysis. The suggestion test requires a finding that there was some suggestion before the invention's creation to combine or modify the prior art-things that have already been done-in such a way as to make the claimed invention.15 The suggestion test is meant to discern whether there already was a suggestion to create what is claimed to be patentable, and thus, patent protection was not needed to prompt the invention's creation.
The Federal Circuit is said to improperly limit the suggestion test inquiry. The court requires a suggestion to come from the prior art itself. Other commonly accepted sources of undocumented suggestions, such as the common knowledge of those skilled in the relevant technology or the nature of the problem the invention is solving, are ignored. This "narrow" suggestion test focuses solely on the prior art. Commentators contend that the narrow suggestion test relaxes the nonobviousness requirement because it limits the grounds upon which a suggestion can be found. As a result, the narrow suggestion test allows obvious inventions to be improperly found nonobvious and receive patent protection. Critics, therefore, call for a full, broader application of the suggestion test that considers other factual bases for suggestion-a "broad" suggestion test. …